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Friday, 8 July 2011

TDI not a good trade mark

A trade mark has to be distinctive to be registered, so there are a lot of signs in use in the motor trade that aren't good candidates for trade marks. The European Union's General Court, where appeals go to from decisions of the office about Community trade marks, recently confirmed in case T-318/09, Audi AG and Volkswagen AG v OHIM, that TDI is descriptive for ‘Vehicles and constructive parts thereof’. If the letters stand for ‘turbo[charged] diesel injection’ or ‘turbo direct injection’ they describe an essential characteristic of the vehicle and do not indicate the source of the goods.

Audi and VW recognised that descriptiveness would be a problem, so argued that through use TDI had come to identify their products only. Odd, given that it's also used for SEAT and Skoda models for starters - which of course are VW group companies but even so, that does rather dilute any disticntiveness argument and make it look more descriptive. Then there are Land Rover, Mercedes, Jaguar, Vauxhall, and goodness knows who else.

The court said Audi and VW had to show that it had acquired distinctiveness through use in all the Member States at the time the application was filed (2003, when there were 15). Advertising material was put in evidence which showed the TDI mark invariably used with other trade marks, such as the manufacturer's name. The court took the view, as it has done in previous cases, that where a sign that has no distinctive character is used alongside one that does, this does not prove that the public perceives the sign as indicating the commercial origin of the goods, so it had not acquired distinctiveness within the meaning of Article 7 (3) of the Community trade marks regulation and had rightly been refused registration. Other manufacturers using the TDI nomenclature don't have to worry too much - and the more they use it, the less suitable it will be as a distinctive sign.

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